ICANN’s institutional memory seems to be slipping, and that concerns us.

On March 20th, ICANN announced that trademark owners would not only be able to register their marks meeting certain validation criteria in the Trademark Clearinghouse (TMC) but also up to fifty variations of each mark that had been found to be the subject of abusive registrations in a UDRP arbitration or court decision (see http://newgtlds.icann.org/en/about/trademark-clearinghouse/strawman-solution-memo-20mar13-en.pdf). This will change the nature of the TMC from a repository of high-quality trademarks to something quite different.

Regardless of how one feels about the substance of the decision (and ICA was on record as against this expansion – see http://internetcommerce.org/Strawman_Non-Solution) the procedure by which it was reached flies in the face of ICANN’s own statements as to whether it had the authority to implement such an expansion and how it would deal with new gTLD issues identified as policy matters by the GNSO Council.

On September 19, 2012 – just six months prior to the “Strawman Solution” decision reached this week — ICANN CEO Fade Chehade dispatched a letter that informed senior members of the US Congress that this very expansion of the TMC database would put ICANN in the position of creating IP rights rather than protecting them:

“It is important to note that the Trademark Clearinghouse is intended to be a repository for existing legal rights, and not an adjudicator of such rights or creator of new rights. Extending the protections offered through the Trademark Clearinghouse to any form of name would potentially expand rights beyond those granted under trademark law and put the Clearinghouse in the role of making determination as to the scope of particular rights. The principle that rights protections ‘should protect the existing rights of trademark owners, but neither expand those rights nor create additional rights by trademark law’ was key to work of the Implementation Recommendation Team…” (Emphasis added)

Likewise, ICANN’s own Summary of the Strawman Solution, issued on November 30, 2012 when it solicited public comment on all the proposals it encompassed, contained this highly relevant statement:

“The inclusion of strings previously found to be abusively registered in the Clearinghouse for purposes of Trademark Claims can be considered a policy matter. This proposal provides a path for associating a limited number of additional domain names with a trademark record, on the basis of a decision rendered under the UDRP or a court proceeding. Given the previous intensive discussions on the scope of protections associated with a Clearinghouse record, involving the IRT/STI, we believe this needs guidance from the GNSO Council.” (Emphasis added)

On addition of names to TMCH previously subject to UDRP or legal proceeding

The majority of the Council believes this suggestion deserves further examination, not only to protect the interests of rights holders, but also to ensure latitude for free speech through lawful and non-abusive registrations. Councillors respectfully observe that the existence of a domain name in the root system is not necessarily evidence of abuse, and that a subsequent registrant may have legitimate and non-infringing use in mind for a domain name corresponding exactly to a term that was the subject of previous action.

Accordingly, the majority of the council finds that this proposal is best addressed as a policy matter, where the interests of all stakeholders can be considered. (Emphasis added)

Back on January 31st of this year, when ICANN solicited feedback on the Staff Paper “Policy vs. Implementation – Draft Framework for Discussion”, what did that framework say in regard to matters identified as falling into the policy category? It proposed that when policy guidance was sought from a relevant supporting organization, like the GNSO, and when that guidance identified an issue as constituting policy, it should be subsequently addressed through a Policy Development Process (PDP) or a Policy Guidance Working Group (PGWG). But of course neither step was taken following receipt of the GNSO’s letter just three weeks ago. Instead, ICANN made a unilateral decision to ignore the GNSO’s recommendation and adopt the proposal absent any further policy development.

Instead, here is how the March 20th announcement describes the decision to expand the TMC database:

Trademark Claims Protection for Previously Abused Names

The fourth element of the Strawman model was a proposal that where there are domain labels that have been found to be the subject of abusive registrations (for example, as a result of a UDRP or court proceeding), a limited number (up to 50) of these could be added to a Clearinghouse record. These names would be mapped to an existing record where the trademark has already been verified by the Clearinghouse.

This element of the proposal was referred to the GNSO specifically, as the scope of protection derived from inclusion in the Trademark Clearinghouse was discussed previously. The GNSO advised that this should be a policy discussion rather than an implementation change. The GNSO Council communication also made reference to the stated principle that the Trademark Clearinghouse is intended to be a repository for existing legal rights, and not an adjudicator of such rights or a creator of new rights.

Having reviewed and balanced all feedback, this propos
al appears to be a reasonable add-on to an existing service, rather than a proposed new service. Given that domain names would only be accepted for association with an existing Clearinghouse record, and only on the basis of a determination made under the UDRP or national laws, the proposal would not require any adjudication by the Clearinghouse. Additionally, the provision of notifications concerning associated domain names would not provide sunrise or other priority registrations, nor have a blocking effect on registration of these names by any party.

It is difficult to justify omission of a readily available mechanism which would strengthen the trademark protection available through the Clearinghouse. Given that the proposal relies on determinations that have already been made independently through established processes, and that the scope of protection is bounded by this, concerns about undue expansion of rights do not seem necessary.

Based on this analysis, ICANN intends to proceed with implementing this aspect of the proposal.

As one can see, there is no reference to ICANN’s own recent earlier statements that this expansion would indeed create new rights and that it was a policy matter rather than an “add-on” to an “existing service”. There is also no explanation of why ICANN brushed aside the GNSO’s feedback that this was a policy matter that required further input from all stakeholders and substituted its own analysis for that of the community represented by the Council. And there is also no explanation of who made this decision, although clearly it was the work of senior staff and officers. As for the statement — “It is difficult to justify omission of a readily available mechanism which would strengthen the trademark protection available through the Clearinghouse.” — if that’s the decision-making criteria, why stop at 50 additional typos, why not permit inclusion of hundreds or thousands of typos (as no doubt trademark interests will soon advocate) and turn the TMC into a system that issues a torrent of warnings to new gTLD registrants who may lack the slightest scintilla of infringing intent, much less actual post-registration infringing use?

Our response would be that it is difficult to justify adoption of a mechanism that flies in the face of ICANN’s own prior statements, that was identified as a policy matter deserving further community input by the policymaking body responsible for gTLDs, and that raises profound issues for the operation of new gTLDs as they approach launch as well as for Internet free speech.

On the same day that the announcement on adoption of the Strawman Solution was made, ICANN released a video in which CEO Chehade stated in regard to the TMC expansion that “we came to the conclusion that it’s an implementation expansion”(see http://blog.icann.org/2013/03/new-gtld-milestones-and-deadlines/). Now we are wondering which “we’ he was referring to. It certainly was not the “we” embodied in the GNSO Council, and it’s certainly not the “we” comprised of the all the stakeholders who would have had a chance to have their interests and views considered if the GNSO’s recommendation had been followed. It’s all fine and good to tout the bottom-up, multi-stakeholder process when ICANN is under siege, but it would seem appropriate for it to actually be observed when it counts on important policy issues rather than witness top-down decision-making.

It’s also worthwhile to debate the difference between policy and implementation, but that doesn’t mean much when settled policies are suddenly categorized as ‘services” and major alterations as mere “add-ons”. And there’s little point in the community relying on ICANN statements that appear to have a shorter shelf life than many grocery items.

We all understand that policy needs to evolve over time, but public declarations made just six months ago can’t be overridden as if they never existed. Not if ICANN’s own credibility is to be preserved, and not if stakeholders are to continue to engage in a multi-stakeholder process. Many may decide it’s not worth the effort after ICANN actions indicate that community input can be ignored and that its own positions and procedures can be cast aside without warning or adequate explanation.